14 Jan Navigating the Trademark Application Process

You are ready! Finally, you’ve hammered out your business idea, name, and structure. You’ve developed your goods or services, and you may even have started selling them. What’s next? Protecting your brand and all of your hard work!

Registering a trademark with the United States Patent and Trademark Office (USPTO) is the single best way to protect the time and financial investment you’ve made in your brand. We’ve written before about the importance of trademarking your brand names. Now, you’ve decided to move forward with an application, but you aren’t sure where to start.

Let’s go through the trademark application process together.

How Do I Apply for Trademark Registration with the USPTO?

Applying for trademark registration with the USPTO isn’t as scary as it seems. In fact, the application itself is simply an online form you complete through the Trademark Electronic Application System (TEAS). But, that’s pretty much the end of the straightforward part.

There are three different TEAS applications for registered trademarks, and each has different requirements and filing fees. We’ve written before about the different fees for TEAS applications, but we will provide the highlights here.

What is the Difference Between the Three TEAS Applications?

There are three TEAS applications that you may use to file your trademark registration application: TEAS Plus, TEAS Reduced Fee, and TEAS Regular. We will quickly go through all three before diving deeper into the meat of the application: the goods and services description.

The goods and services description, as a general matter, is the portion of the trademark registration application wherein the applicant describes the goods or services that will be associated with the mark. For example, if a company is submitting a trademark application for the brand name “Sarah’s Super Sheep Socks.” It will need to provide a description of the goods that it sells (presumably, wool socks) so that the mark can be registered in association with those particular goods. We will discuss these descriptions in greater detail below. But first, the three applications:

TEAS Plus 

This is the least expensive TEAS application (at $225 per class of goods and services), but it also has the most stringent requirements. Most significantly, TEAS Plus requires applicants to choose a description for the goods and services provided from a pre-approved list of choices. Because the examining attorney who will be reviewing the application will not need to assess the accuracy and validity of a custom-written description, this application will take less time for the examiner to review.

Although extensive, the USPTO’s list of pre-approved goods and services descriptions is limited. If you cannot find a description within that list that accurately and completely depicts the specific goods or services you provide, you may need to choose a different application.

TEAS Reduced Fee

The next application format is TEAS Reduced Fee. This application costs $275 per class of goods and services. It is only slightly more than the Plus application, and the requirements are slightly less stringent. If you choose to file the TEAS Reduced Fee application, you do not need to choose a description from the pre-approved list. Instead, you may craft a custom description of your goods and services.

In general, it is strongly recommended to work with an experienced trademark attorney when drafting a custom description because the language used can have significant impacts on the outcome of your application and the strength of your trademark protection. However, we will get into the details of crafting a custom description below.

TEAS Regular 

The TEAS Regular application is the most expensive and the least common. It can be filed either online or by mail, and it costs $400 per class of goods and services. The benefit of using this form is that it does not require as much information as the other applications. If you wanted to get a trademark filed quickly without the need to gather additional information, TEAS regular might be the best option.

Although the difference between each of these forms is not immediately apparent to most applicants, the choice of application actually will have a significant impact on how the USPTO examining attorney treats your application, and it could impact the outcome. If you are confused about which application is right for you, feel free to reach out to The Brand Protected ® for help.

The Importance of the Goods and Services Description

Although it may not seem like a lot, the goods and services description serves an incredibly important function in the trademark application process. There are two parts of a trademark registration application: the mark to be protected, and the goods and services that are associated with that mark. Trademark protection flows between these two parts. The goods and services are protected with regard to the mark, and the mark is protected as long as it is used in association with those goods and services.

That’s why it is so important that the description of the goods and services is accurate and complete. The examining attorney will use this description to compare with other registered trademarks and determine distinguishability. The first time an examiner uses this description, he or she will compare it to existing registered trademarks. If the description is too broad, it runs the risk of getting rejected or inviting an office action from the examining attorney that costs you time and money. The second time the examiner will look to your description is after the trademark has been registered. In the future, when other applications are submitted with similar marks, examiners will look to your goods and services description to distinguish your trademark from the application. If your description is too narrow, the examining attorney may end up granting a similar trademark to a company that provides similar goods and services. This unnecessarily limits the scope and enforceability of your trademark protection.

Choosing a Goods and Services Description from the List

When choosing which application form to use for your trademark application, first make a list of all of the goods and services you provide. This list, whether you have actually started selling the goods and services yet or not, will help you determine the scope of offerings that you want covered by your trademark protection.

Second, look through the USPTO ID Manual at the list of pre-approved descriptions. If there is a description in the manual that accurately and completely describes the goods and services you provide, you are eligible to use the TEAS Plus application. However, if there is not a description in the list that both accurately and completely describes your goods and services, take a step back. Do not settle for a description that is “close enough” just to get the lower fee. An inappropriate description can result in an application being rejected or, if approved, unnecessarily restrictive trademark protection.

Crafting Your Own Custom Goods and Services Description  

If there is no appropriate description for your goods and services within the pre-approved list, you will need to craft a custom description. Again, it is essential that this description be both accurate and complete. As discussed above, it must also walk the line between overly broad (resulting in a possible rejection) and overly narrow (which can create the risk of future challenges enforcing the trademark). The description cannot be amended after a trademark application has been submitted, so it is essential to get it right. That’s why most intellectual property experts recommend working with an attorney to draft a custom goods and services description.

If you do choose to craft the description on your own, here are some helpful tips to get you started:

• Work off of a description provided in the manual. You can amend an existing description to suit your goods and services.
• Be specific. Do not use overly broad language.
• Do not use indefinitely language or words that could fall into multiple classes.
• Use common language that will be understandable to the examining attorney. Your description should not require specialized knowledge to decipher.

Work with an Experienced Trademark Attorney to Take the Guesswork Out of Filing

At The Brand Protected®, trademark applications are our bread and butter. We are very familiar with crafting applications that are successful and that create the broadest possible protections for our clients’ goods and services. If you are interested in learning more about the trademark application process or in working with The Brand Protected® to submit your own application, click here to set up an appointment.